Baja Fish Tacos, Inc. v. Sertyulmip c/o S Doctor R Sauvage
Claim Number: FA0810001230692
Complainant is Baja Fish Tacos, Inc. (“Complainant”), represented by Amanda
The domain names at issue are <bajafishtacos.com> and <bajafishtaco.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On November 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 27, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com and firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bajafishtacos.com> domain name is identical to Complainant’s BAJA FISH TACOS mark and Respondent’s <bajafishtaco.com> domain name is confusingly similar to Complainant’s BAJA FISH TACOS mark.
2. Respondent does not have any rights or legitimate interests in the <bajafishtacos.com> and <bajafishtaco.com> domain names.
3. Respondent registered and used the <bajafishtacos.com> and <bajafishtaco.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Baja Fish Tacos, Inc.,
operates restaurant and catering services throughout the
Respondent registered the disputed domain names on February 8, 2000. Respondent’s disputed domain names resolve to websites that display links to third-party websites, some of which compete with Complainant’s restaurant and catering services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has provided evidence of the registration of its
BAJA FISH TACOS mark with the USPTO. The
Panel finds this registration sufficiently establishes Complainant’s rights in
its mark pursuant to Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
Additionally, Complainant alleges it possesses common law rights in its BAJA FISH TACOS mark dating back to 1998. Pursuant to Policy ¶ 4(a)(i), a mark need not be registered in order for Complainant to establish rights in it. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). Complainant states it has used its BAJA FISH TACOS mark in conjunction with its restaurant and catering business since 1998 and Respondent does not challenge these statements. Therefore, the Panel finds Complainant has sufficiently established common law rights in its BAJA FISH TACOS mark dating back to 1998. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
domain name is identical to Complainant’s BAJA FISH TACOS mark pursuant to
Policy ¶ 4(a)(i) because the deletion of spaces and
addition of the generic top-level domain “.com” are irrelevant alterations
under the Policy. See
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts Respondent lacks rights and legitimate
interests in the disputed domain names.
Complainant must establish a prima
facie case to support these assertions, and the Panel finds Complainant has
done so in these proceedings. Once
Complainant has produced a sufficient prima
facie case, the burden then shifts to Respondent to establish
otherwise. Respondent failed to submit a
response to these proceedings, thus the Panel may infer Respondent lacks rights
and legitimate interests in the disputed domain names. Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO
However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent’s disputed domain names resolve to websites that display links to third-party websites, some of which compete with Complainant’s restaurant and catering business. The Panel finds Respondent’s use of the disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant contends Respondent is not commonly known by the disputed domain names. The WHOIS information lists Respondent as “Sertyulmip c/o S Doctor R Sauvage,” and Complainant has not authorized Respondent to use its mark. Thus, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel find Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names to provide links to third-party websites, some of which compete with Complainant. The Panel finds Respondent’s competing use of the disputed domain names constitutes disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Furthermore, Respondent presumably receives compensation in the form of click-through fees from its use of the disputed domain names. The Panel finds Respondent’s actions are an attempt to profit by creating confusion in the minds of Internet consumers as to Complainant’s association with the disputed domain names. Thus, the Panel finds Respondent’s actions are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See American Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that <bajafishtacos.com> and <bajafishtaco.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 10, 2008
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